Lightricks Ltd v. Plotagraph Inc

1. Case Identification

• Case #: IPR2023-00568
• Patent #: 11,182,641
• Filed: April 11, 2023
• Petitioner(s): Lightricks Ltd.
• Patent Owner(s): Plotagraph, Inc. and Sascha Connelly
• Challenged Claims: 1-4, 8-15, and 19-20

2. Patent Overview

• Title: Automating a Shifting of Pixels Within a Video File
• Brief Description: The ’641 patent relates to systems and methods for animating a digital image by allowing a user to define a starting point and an ending point to create a "digital link," identifying pixels along that link, and then shifting those pixels in the link's direction to create motion.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 8-15, and 19-20 are Anticipated or Obvious over AEM

• Prior Art Relied Upon: AEM (a user manual for Adobe After Effects CS6, publicly available before the patent’s priority date).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that AEM, which describes the functionality of the Adobe After Effects CS6 software, taught every limitation of the challenged claims. AEM disclosed extracting a single frame from a video file to use as a new layer in a composition. It further taught using the "Puppet" effect, where a user places "Deform" pins on an image to define points of motion. By defining a starting position (first keyframe) and an ending position (second keyframe) for a Deform pin, a user creates a "motion path" which corresponds to the patent's "digital link." AEM explained that the software then automatically animates the pixels associated with the pin along this path, which constitutes the claimed "shifting" of pixels. AEM also disclosed features for creating looped animations (meeting claim 8) and applying masks to select or exclude specific pixels from being animated (meeting claims 13-15).
  • Motivation to Combine (for §103 grounds): While primarily argued as anticipation, Petitioner contended that to the extent any minor feature was not explicitly disclosed, it would have been obvious to a person of ordinary skill in the art (POSITA) to implement it. For example, a POSITA would find it obvious to apply the Puppet animation tool to a frame extracted from a video, as such frames were easily accessible within the software and desirable for modification.

Ground 2: Claims 1-4, 8-14, and 19-20 are Obvious over IMU in view of Okabe

• Prior Art Relied Upon: IMU (documentation for the command-line software ImageMagick Version 6) and Okabe (a 2011 article from the Computer Graphics Forum titled "Creating Fluid Animation from a Single Image using Video Database").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that IMU taught a command-line method for creating animations by applying distortion effects, such as "Shepard's Distortion," which shifts pixels based on user-defined control points. IMU could create a sequence of frames to form a looping animation. However, this process was described as laborious and non-graphical, requiring manual text commands for each frame. Okabe disclosed a user-friendly graphical user interface (GUI) for creating fluid animations from a single image. In Okabe, a user simply draws "strokes" on an image to define the desired direction and speed of motion, and the system automatically generates a looping animation. Okabe also taught using a matte to define the specific "region of interest" to be animated.
  • Motivation to Combine: A POSITA would combine Okabe's simple and intuitive graphical user commands with IMU's powerful image processing engine to overcome the tedious, non-graphical nature of creating animations in IMU. IMU's own documentation acknowledged its lack of a GUI as a disadvantage compared to other available programs. Okabe’s method was well-suited for implementing a GUI for IMU's animation functions, replacing complex command-line inputs with simple user-drawn strokes to define motion, thereby reducing user burden and making the process faster and more intuitive.
  • Expectation of Success: A POSITA would have reasonably expected success in implementing Okabe's GUI-based approach on top of IMU's existing animation and distortion algorithms, as this involved applying known GUI principles to a well-documented command-line tool.

Ground 3: Claims 13-15 are Obvious over IMU, Okabe, and Li

• Prior Art Relied Upon: IMU, Okabe, and Li (a 2004 article from ACM Transactions on Graphics titled "Lazy Snapping").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the IMU-Okabe combination to address the masking limitations of claims 13-15. The IMU-Okabe combination already taught applying a matte to specify a region of interest for animation. Li disclosed a "novel coarse-to-fine UI design for image cutout" called "Lazy Snapping," which allowed a user to easily separate a foreground object from its background by drawing a few simple marker lines on each. This process generated a highly accurate mask with minimal user effort.
  • Motivation to Combine: The motivation was exceptionally strong, as Okabe itself expressly taught that its matte could be created "using a scribble-based image segmentation tool," specifically citing Li's "Lazy Snapping" tool. A POSITA seeking to implement the IMU-Okabe combination would have been directly motivated by Okabe to incorporate Li's superior "Lazy Snapping" tool to create the matte that defines the animated and non-animated portions of the image. This would improve the ease of use, efficiency, and quality of the masking process within the combined animation system.
  • Expectation of Success: Integrating Li's well-described image segmentation algorithm into the proposed IMU-Okabe system would have been a straightforward task for a POSITA, particularly given the explicit suggestion in Okabe.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) was unwarranted. A related district court litigation resulted in a finding that the ’641 patent was ineligible under 35 U.S.C. §101, and that determination is currently on appeal. Petitioner contended that because the appeal focuses only on §101 issues, it is unlikely that a district court trial on the §102 and §103 invalidity issues presented in the IPR petition would occur before the Board could issue a Final Written Decision.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-4, 8-15, and 19-20 of Patent 11,182,641 as unpatentable.